CASELEX:EU:2007:81 Article 234 EC- Jurisdiction of the Court – Agreement establishing the World Trade Organisation

The question referred by the Supremo Tribunal de Justiça (Portugal) in proceedings between the applicant, Merck Genéricos – Produtos Farmacêuticos Ldª (‘Merck Genéricos’) and Merck & Co. Inc. (M & Co.) and the defendant, Merck Sharp & Dohme Ldª (‘MSL’) concerning the alleged violation by Merck Genéricos of a patent held by M & Co. in Portugal.

M & Co. is the holder of Portuguese patent No 70 542, the application in respect of which was filed on 4 December 1979 and which was issued on 8 April 1981. This patent, entitled ‘Process for the preparation of amino-acid derivatives as hypertensives’, concerns a process for preparing a pharmaceutical compound containing the active substance Enalapril. The resulting pharmaceutical product has been marketed since 1 January 1985 under the trade mark RENITEC. MSL has been granted the right to exploit that patent, including powers to defend it.

In 1996 Merck Genéricos placed on the market a pharmaceutical product under the trade mark ENALAPRIL MERCK, which it sells at prices appreciably lower than those for the product under the trade mark RENITEC and which it has claimed, when promoting its use by doctors, to be the same product as Renitec.

M & Co. and MSL have brought an action against Merck Genéricos, seeking an order that the latter should refrain from importing, marketing in Portugal or exporting the product at issue under the trade mark ENALAPRIL MERCK or under any other commercial description without the express and formal authorisation of M & Co. and MSL, and seeking compensation for the material and non-material damage caused by the defendant’s unlawful conduct.